Ex Parte Kwok

Patent Trial and Appeal Board

Apr 25, 2017

11364055 (P.T.A.B. Apr. 25, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/364,055 03/01/2006 Philip Rodney Kwok 4398-519 8983
23117 7590 04/27/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
STUART, COLIN W
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
04/27/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP RODNEY KWOK
Appeal 2015-002342
Application 11/364,055
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Philip Rodney Kwok (Appellant) appeals under 35U.S.C. § 134 from
the Examiner’s final decision rejecting claims 27, 29, 31, 33, 34, 36, 39—49,
51—57, 62—75, 77, 78, and 82—85.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Claims 58—60 have been withdrawn from consideration. Appeal Br. 15.
Appeal 2015-002342
Application 11/364,055
BACKGROUND
Independent claims 27, 34, 44, 51, 56, 66, 67, and 68 are pending.
Independent claim 27, reproduced below, illustrates the claimed invention.
27. An assembly for treating a sleep related breathing
disorder by communicating pressurized breathable gas to a
patient's airways during sleep, the assembly comprising:
a chamber adapted to be pressurized with the breathable
gas, the chamber being defined at least in part by a seal adapted
to provide an effective seal with at least the patient’s nasal
airways during continuous positive airway pressure (CPAP)
treatment while the patient is sleeping; and
a harness to support the seal against the patient’s face
during CPAP treatment, wherein the harness comprises:
a cap portion adapted to engage an occipital region of the
patient’s skull, the cap portion including an upper strap portion
and a lower strap portion that cooperate to define a single,
continuous opening, the opening being adapted to at least partly
receive the occipital region, and at least a portion of the cap
portion is adapted to angle downwardly from a position
superior to an upper portion of the patient’s ear to a position
inferior the upper portion and posterior to the patient’s ear, said
portion of the cap portion being adapted to extend from
superior to the patient’s ear to engage the occipital region, the
cap portion engaging a curved region of the occiput at a lower
rear region of the patient’s skull such that the cap portion is
fixed relative to the patient’s face; and
side straps adapted to engage with slotted connectors to
support the chamber on the patient’s face, each of the side
straps having a proximal end fixed relative to the cap portion
and a distal end that is threaded through a respective one of the
slotted connectors and doubled back to effect an adjustable
hook and loop connection, each said side strap being
dimensioned and positioned to extend from a position adjacent
a top portion of the patient’s ear at a downward angle, across
the patient’s cheeks, towards the respective slotted connector,
wherein
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the harness is adapted to support the chamber on the
patient during sleep and is adapted to maintain the effective seal
during the CPAP treatment, even if the patient moves while
asleep, and
none of the side straps is adapted to pass under the
patient’s ear.
REJECTIONS2
I. Claims 44—57, 62—65, 72, 73, 75, 82, 83, and 85 stand rejected
under 35 U.S.C. § 112 11, as failing to comply with the written description
requirement. Final Act. 6.
II. Claims 31, 33, 34, 36, 3SM3, 56, 57, 64, 65, 73, 83, and 84
stand rejected under 35 U.S.C. § 112 12.3 Final Act. 7.
III. Claims 27, 33, 34, 39, 41^13, 56, 62-65, 72, 73, 75, and 82-85
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kopala (US
5,042,478, iss. Aug. 27, 1991), Gongwer (US 3,653,086, iss. Apr. 4, 1972),
and Rudolph (US 5,265,595, iss. Nov. 30, 1993). Final Act. 8.
IV. Claims 29 and 36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kopala, Gongwer, Rudolph, and Feder (US 5,046,200, iss.
Sept. 10, 1991). Final Act. 17.
V. Claims 31 and 40 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kopala, Gongwer, Rudolph, and Byram (US 5,464,010,
iss. Nov. 7, 1995). Final Act. 18.
2 The Examiner has withdrawn the rejection of claims 27, 29, 31, 34, 36,
and 39-43 under 35 U.S.C. § 112 11, and the rejection of claim 85 under
35 U.S.C. § 11212. Ans. 63-64.
3 Claims 62, 63, 72, 75, and 82 were mistakenly rejected under 35 U.S.C.
§ 112 12. Ans. 64. We understand the rejection of these claims to be
withdrawn.
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VI. Claim 57 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Kopala, Gongwer, Rudolph, and Bierman (US 2,444,417,
iss. July 6, 1948). Final Act. 18.
VII. Claims 44-47, 55, 74, and 77 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kopala, Rudolph, Feder, and Baker (US
4,910,806, iss. Mar. 27, 1990). Final Act. 19.
VIII. Claims 48 and 49 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kopala, Baker, Rudolph, Feder, and Lombard (US
2,248,477, iss. July 8, 1941). Final Act. 22.
IX. Claims 51—54 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kopala, Gongwer, Rudolph, and Petrie (US 5,361,416,
iss. Nov. 8, 1994). Final Act. 23.
X. Claims 66 and 69 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kopala, Gongwer, Rudolph, and Feder. Final Act. 26.
XI. Claims 67 and 70 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kopala, Gongwer, Rudolph, Feder, and Sullivan (US
5,243,971, iss. Sept. 14, 1993). Final Act. 29.
XII. Claims 68 and 71 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kopala, Baker, Rudolph, Feder, and Sullivan. Final Act.
32.
XIII-XXXVI. Claims 27, 29, 31, 33, 34, 36, 39-49, 51-57, 62-75,
77, 78, and 82—85 stand rejected under various grounds of non-statutory
obviousness-type double patenting. Final Act. 37—66.
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OPINION
Rejections I and II—112 Rejections
Appellant does not refute the rejection of claims 44—57, 62—65, 72,
73, 75, 82, 83, and 85 under 35 U.S.C. § 112 11, or the rejection of claims
31,33, 34, 36, 39-43, 56, 57, 64, 65, 73, 83, and 84 under 35 U.S.C. § 112
12. These rejections are therefore summarily sustained.
Rejections III XII—Non-Analosous Art
Rather than arguing the matter of Rejections III—XII separately,
Appellant contends that certain references should not have been used in a
rejection because they are non-analogous art. We consider whether each
challenged reference is analogous art in turn, noting which rejections rely
upon that reference.
Gongwer
Regarding Rejections II—VI and IX—XI, Appellant argues that
Gongwer is non-analogous art because it is neither in the field of Appellant’s
endeavor nor reasonably pertinent to a problem faced by Appellant. Appeal
Br. 22—24. Appellant appears to define his field of invention as “an
assembly for treating a sleep related breathing disorder by communicating
pressurized breathable gas to a patient’s airways during sleep.” Id.
Appellant contends that Gongwer is directed to a streamlined swim mask
and therefore is not in the same field of endeavor. Id. at 22.
Appellant defines the problem faced in terms of the “goal of the
present technology” as “creating] a mask, straps, and/or assembly that are
worn during sleep that provide an effective seal and are comfortable and
able to deal with movement during sleep.” Appeal Br. 22 (citing problems
discussed at Spec. p. 1,1. 12 — p. 2,1. 19). More specifically, Appellant
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defines the problems as (1) “proper tensioning for CPAP treatment,” (2)
preventing mask pivoting from incorrect tightening of straps “(e.g. changing
the force vector),” and (3) preventing discomfort during sleep (and possible
resulting non-compliance). Id. at 22—23. According to Appellant, the
Specification “makes clear that nasal masks for administrating CPAP suffer
different problems than masks for treatment from respirators or breathing
apparatus with a full face cover.” Id. at 23. Appellant contends that
Gongwer does not address any of these problems, instead being directed to
decreasing drag while swimming. Id.
The Examiner responds that one skilled in the art would not have been
limited to headgear/hamesses for treating a sleep-related breathing disorders
via communication of pressurized breathable gas to a patient,
but rather, one [skilled] in the art would have found it obvious
to look to . . . other respiratory applications, such as in the
Gongwer and Byram references, as well as other harness
assemblies for attaching to a user, such as the Feder, Byram,
and Baker references.
Ans. 64—65.
The Examiner also responds that Appellant defines the “problems
faced” as patient non-compliance due to discomfort, and contends that each
of Gongwer, Feder, Byram, Baker, and Petrie provide “explicit or implicit
teachings relating to improved comfort of a harness for connecting a device
to a patient’s face.” Ans. 65.
Specifically regarding Gongwer, the Examiner responds that Gongwer
was relied on for disclosing a “rear/cap portion of the harness 62 including
upper and lower strap portions providing an opening therebetween (as best
shown in Fig. 2),” and that one skilled in the art “would have recognized
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from Fig. 3 that the upper and lower strap portion” configuration of
Gongwer’s harness 62 “would provide a larger area of contact on the back of
the user’s head, thus better conforming to the topography of the rear of the
user’s head,” which is “reasonably pertinent to the problem of providing
comfort and compliance.” Ans. 65—66.
The analogous-art test requires that the Board show that a reference is
either in the field of the applicant’s endeavor or is reasonably pertinent to the
problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). The
“field of endeavor” prong asks if the structure and function of the prior art is
such that it would be considered by a person of ordinary skill in the art
because of the similarity to the structure and function of the claimed
invention as disclosed in the application. In re Bigio, 381 F.3d 1320, 1325-
27 (Fed. Cir. 2004). “A reference is reasonably pertinent if, even though it
may be in a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his problem.” In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Looking to Appellant’s Specification, we define the “field of the
invention” to be perhaps as narrow as “a harness assembly for a nasal
mask.” Spec. 12 (capitalization omitted). This defined field is consistent
with the entirety of the Specification, including the claims. We further
define the problem faced by Appellant as facilitating patient compliance by
providing an effective and acceptably comfortable nasal mask seal against a
user’s face. Id. at 14. The effective mask seal is maintained via “correct
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tension in the harness,” because “[u]nder-tensioning results in a loose mask
and poor seal” and “[o]ver-tensioning can lead to discomfort for the wearer.”
Id. Further, Appellant employs (1) the cap portion 44 to “cover[] and grip[]
the occipital region of the wearer to facilitate securely locating the cap
portion during use” {id. at 139), (2) the cap portion 72 with opening 74
through which “the occiput protrudes to assist in securely locating the cap
portion” while reducing heat buildup {id. at 146-47), (3) the couplers 48,
60, 70 to allow the harness elements to move independently of one another
during adjustment and to retain mask position and secure attachment during
movement of a harness part {id. at 142), and (4) hook and loop connects
allowing adjustment for better user fit {id. at 141). Each of these
components is directed to solving a specific problem related ultimately to
providing patient comfort while retaining a secure seal.
Gongwer is directed to a streamlined swim mask that is “secured to
the head of the swimmer” and includes a sight plate 19 and gasket 25 that
cover the user’s eyes and nose and cooperate to seal the eyes and nose of the
wearer from water infiltration. Adjustable, flexible strap 62 applies
adequate tension to the mask and the gasket 25 to facilitate a suitable seal.
Gongwer, Abstract; 2:49—51, 68—75; 3:67—73.
We find that Gongwer’s flexible strap 62 is a harness assembly.
Further, because Gongwer’s flexible strap 65 secures a gasket 25 that seals
the user’s nose, we find that Gongwer’s gasket 25 and sight plate 19 form a
nasal mask. We thus find that Gongwer is in the same field of invention.
Further, we find that Gongwer’s flexible strap 62 is relevant to the problems
of providing an effective nasal mask seal to a user’s face. We therefore
agree with the Examiner that Gongwer is analogous art.
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Feder
Regarding Rejections IV, VII, VIII, and X—XII, Appellant argues that
Feder is non-analogous art because Feder is directed to a “reversible, quick-
adjustable diver’s face mask strap,” rather than a mask that is comfortable
when worn during sleep while providing an effective seal. Appeal Br. 24.
Feder does not contemplate pressurized gas acting in a direction that breaks
a seal with the user. Id. at 25. Rather, according to Appellant, Feder’s mask
is “less harsh on a user’s head than rubber straps,” avoids tangled hair and
hook-type material wearing out, achieves the coefficient of friction available
from rubber straps, can be used with a diver’s hood, and prevents straps
from loosening as a diver descends. Id. at 24—25.
The Examiner responds that preventing hair tangling improves user
comfort, and is thus pertinent to Appellant’s problem, and that Feder
discloses using fabric for the upper and lower straps of a harness that
conforms to the shape of a user’s head to provide “a comfortable, less-harsh
interface between the user’s head and the strap as well as avoiding tangling.”
Ans. 66 (citing Feder 3:6—16 and 1:14—18).
We find that Feder’s mask strap is a harness assembly. Further,
because Feder’s mask strap is configured to secure a mask that seals the
user’s nose, we find that Feder’s mask strap is a nasal mask harness, and is
therefore in the same field of invention. Further, we determine that Feder’s
mask strap is relevant to providing an effective mask seal while maintaining
user comfort. See Feder 1:16—20 (describing a prior art problem as: “This
new generation of mask straps is gentler to the back of the wearer’s head and
the tangling of hair is largely avoided. However, the mask strap is not as
securely seated on the back of the diver’s head as in the case of the old
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rubber straps.”). We therefore agree with the Examiner that Feder is
analogous art.
Byram
Regarding Rejection V, Appellant argues that Byram is non-
analogous art, being directed to a respirator (full face) that can be partially
removed and held beneath a user’s chin when not in use. Appeal Br. 25.
According to Appellant, Byram addresses problems associated with a user
leaving a contaminated area and temporarily removing the respirator to
speak with another person, does not address comfort during sleep, and “does
not deal with pressurized gas at the user interface” because Byram’s
respirator provides gas at atmospheric pressure. Id.
The Examiner responds that Byram was relied on for disclosing a
“particular spatial configuration” of harness side straps in relation to a rear
strap — Byram’s spatial configuration of the rear and side straps conforms to
the user’s head and “in view of this teaching, one [skilled] in the art would
have found the Byram reference to be reasonably pertinent to the problem of
providing increased comfort and compliance.” Ans. 67.
We find that Byram’s individual straps 14 and crown member 30 form
a harness assembly. Further, because Byram’s harness assembly 14, 30 is
configured to secure a respirator body 20 that seals the user’s nose, we find
that Byram’s harness 14, 30 is a nasal mask harness, and is therefore in the
same field of invention and that it also addresses the problem of providing
user comfort. We therefore agree with the Examiner that Byram is
analogous art.
Baker
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Regarding Rejections VII, VIII, and XII, Appellant argues that Baker
is non-analogous art because it is directed to a diver mask strap and solves
problems related to buoyancy and hair tangling. Appeal Br. 26.
The Examiner responds that Baker is relied on for disclosing a single
rear band 10 that “comfortably contacts a larger area of the back of user’s
head and avoids pulling or tangling of the user’s hair,” which “would have
been recognized by one [skilled] in the art as being reasonably pertinent to
the problem of providing increased comfort and compliance.” Ans. 67.
We find that Baker’s adjustable elastic strap 10 is a harness assembly.
Further, because Baker’s strap 10 secures a mask 12 that seals the user’s
nose, we find that Byram’s strap 10 is a nasal mask harness, and is therefore
in the same field of invention. Further, Byram’s hook and loop fastener is
similarly employed to allow adjustment for better user fit thus addressing the
problem of providing for user comfort. Spec. 141; Baker 2:24—54 (“a hook
and loop type fastener [is] provided in operative relationship with ribbon
members 18, 20 for adjustably attaching strap 10 to face mask 12.”). Baker
is analogous art.
Petrie
Regarding Rejection IX, Appellant argues that Petrie is non-analogous
art because it is directed to a chin strap for a sleep apnea mask, and is not
reasonably pertinent to the problems face by Appellant. Appeal Br. 26.
The Examiner responds that Petrie is relied on for disclosing a
coupling member 20 between two strap elements of a harness, which
provides “adjustability between strap elements” to increase user comfort and
compliance. Ans. 68.
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Although Petrie’s harness is not a harness assembly for a nasal mask,
Petrie’s harness assembly employs D-rings 20 allowing straps 16, 19 to
adjust to suitably secure the chin cup “according to the comfort of the user.”
Petrie 3:1—3. Thus, Petrie is relevant to a problem faced and solved by
Appellant in employing D-rings, because Petrie’s D-rings allow its harness
elements to move independently of one another during adjustment and retain
the attached device’s proper position. See Spec. 142, Petrie 3:1—3, 18—21.
Petrie is analogous art because its disclosure is reasonably pertinent to a
problem faced by Appellant.
Rejections III XII—Reasoning
Rather than arguing the claimed subject matter of Rejections III—XII
separately, Appellant contends that the reason for combining certain
references lacks a rational basis. We consider whether each challenged
reasoning has a rational basis, noting which rejections rely upon that
reasoning. The claims subject to each rejection stand or fall with the
determination of whether the reasoning has adequate support for the
conclusion of obviousness.
Kopala and Gongwer
Regarding rejections III—VI and IX—XII, Appellant argues that the
Examiner’s proffered reason for combining Kopala and Gongwer lacks a
rational basis because (1) there is no recognition that Kopala suffers from
lack of stability, (2) nothing suggests that Gongwer’s straps would be more
stable than Kopala’s straps, and (3) without evidentiary support, the
rejection is based purely on the Examiner’s opinion, which is insufficient for
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a determination of obviousness, (4) one skilled in the art would not have
looked to Gongwer to modify Kopala because the force vectors to provide
appropriate sealing in Gongwer and Kopala are different, (5) one skilled in
the art would not have looked to Gongwer to modify Kopala because
Gongwer’s device supplies air to a user’s mouth, separate from the mask
around the user’s eyes and nose, while Kopala supplies air exclusively to the
patient’s nose with a mask supported by headgear — and sealing to keep a
pressurized air supply from escaping is different than sealing to keep water
from getting into the static environment, and (6) the allegation of increased
stability by modifying Kopala with Gongwer is contrary to Kopala’s desire
for the mask to remain adjustable. Appeal Br. 26—28.
The Examiner responds that the stated reason for modifying Kopala in
view of Gongwer (i.e., to provide a more stable attachment interface
between the mask and the patient), “is not based on opinion, but rather [on
the rationale that] one of ordinary skill in the art would have found it
apparent that [Gongwer’s strap configuration] would better conform to a
greater area of the back of the user’s head versus the single thin band strap
24 of Kopala” to provide a more stable attachment interface between the
mask and the patient. Ans. 69.
It is well settled that simple substitution of one known element for
another to obtain predictable results is an exemplary rationale that supports a
conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
401 (2007). Thus, Kopala (and the other cited references) need not identify
a stability issue or improved stability for the Examiner’s reasoning to have a
rational basis.
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The Examiner finds, and Appellant does not refute, that Kopala
discloses a device that differs from the claimed invention only by the
substitution of some components of Kopala (i.e., the strap 24) with other
components of Gongwer (i.e., a cap portion including upper and lower straps
that cooperate to define an occipital opening) whose functions were known
in the art. Final Act. 8—9. The Examiner contends that one skilled in the art
could have substituted one known element for another, and the results of
such a substitution would have been predictable, for example an increased
stability (i.e., “due to the upper and lower strap portions contacting more of
the patient’s occipital region/occiput and conforming more to the shape of
the patient’s head”). Id. at 9—10. If the results of the combination are indeed
predictable, neither Kopala nor Gongwer must explicitly recite the results to
provide a rational basis therefore.
Regarding Appellant’s argument that the Examiner’s proffered
reasoning lacks a rational basis because one skilled in the art would not have
looked to Gongwer to modify Kopala, as the force vectors to provide
appropriate sealing in Gongwer and Kopala are different (Appeal Br. 27),
the Examiner responds that replacing Kopala’s thin single band 24 with
Gongwer’s upper and lower strap portions allows better conformance with
the back of the user’s head and “would have left the sealing force vectors of
Kopala unchanged.” Ans. 69—70.
Lacking any evidentiary support regarding different force vectors
being necessary in Kopala and Gongwer for appropriate sealing, and lacking
a technical explanation regarding the cause and effect of such force vectors,
we are not persuaded by Appellant’s argument. See In re De Blauwe, 736
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F.2d 699, 705 (Fed. Cir. 1984) (“Arguments and conclusions unsupported by
factual evidence carry no evidentiary weight”).
Appellant argues that the Examiner’s proffered reasoning lacks a
rational basis because one skilled in the art would not have looked to
Gongwer to modify Kopala, since Gongwer’s device supplies air to a user’s
mouth, separate from the mask around the user’s eyes and nose, while
Kopala supplies air exclusively to the patient’s nose with a mask supported
by headgear — and sealing to keep a pressurized air supply from escaping is
different than sealing to keep water from getting into the static environment.
Appeal Br. 27—28.
The Examiner responds that the proposed modification of the rear
strap “did not include adjustments to the sealing forces, but rather all sealing
forces of Kopala would remain the same as required by the Kopala device.”
Ans. 70.
Lacking evidentiary support and a detailed explanation regarding why
Kopala’s and Gongwer’s sealing types (or differences in direction from
which pressure acts on the seal) would cause one skilled in the art not to
combining their harness teachings, we are not persuaded by Appellant’s
argument.
Appellant then argues that the Examiner’s proffered reasoning lacks a
rational basis because the allegation of increased stability by modifying
Kopala with Gongwer is contrary to Kopala’s desire for the mask to remain
adjustable. Appeal Br. 28.
Regarding the desire for Kopala’s strap to remain adjustable, the
Examiner responds that one skilled in the art would have recognized the
ability to adjust the positioning of the proposed modified harness on a user’s
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head to provide greater comfort for the user, and that replacing the rear strap
portion of Kopala with that of Gongwer “would not affect the ability of the
straps/hamess of modified Kopala to be adjustable.” Ans. 70.
The Examiner has the better position. It is unclear why modifying
Kopala’s strap 24 to include Gongwer’s cap portion having upper and lower
straps would affect the adjustability of Kopala’s harness in a way that would
cause one skilled in the art not to combine Kopala and Gongwer.
For the reasons explained above, we are not persuaded that there is
error in the Examiner’s reason for combining Kopala and Gongwer.
Kopala and Feder/Byram
Regarding Rejections IV, V, VII, VIII, X—XII, Appellant argues that
the Examiner’s proffered reason for combining Kopala with Feder and/or
Byram lacks a rational basis because (1) there is no recognition that Kopala
suffers from problems allegedly solved by Feder or Byram, (2) the force
vectors in Feder and Byram are sufficiently different from the force vectors
required in Kopala that one skilled in the art would not have looked to either
Feder or Byram to modify Kopala, and (3) neither Feder nor Byram have
any disclosure that the devices disclosed therein would be of any use for a
sleeping patient. Appeal Br. 28—30.
As stated above, it is well settled that simple substitution of one
known element for another to obtain predictable results is an exemplary
rationale that supports a conclusion of obviousness. See KSR, 550 U.S. at
401. Thus, Kopala (and the other cited references) need not recognize any
problems for the Examiner’s reasoning to have a rational basis.
The Examiner finds, and Appellant does not refute, that the combined
harness of Kopala and Gongwer discloses a device that differs from the
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claimed invention only by the composition of its strap 24, which the
Examiner proposes to modify with the fabric of Feder, whose functions were
known in the art. Final Act. 17. The Examiner further proposes to modify
the combined harness of Kopala and Gongwer by positioning an intersection
of Gongwer’s upper and lower straps slightly posterior to the patient’s ear.
Id. at 18. The Examiner contends that one skilled in the art could have
substituted one known composition for another, and relocated the
intersection with predictable results. Id. at 17, 18. Appellant does not refute
that the results of such modification would be predictable.
Appellant appears to be arguing that the Examiner’s proffered
reasoning lacks a rational basis because one skilled in the art would not have
looked to Feder or Byram to modify Kopala, as the force vectors to provide
appropriate sealing in Kopala and Feder/Byram are different. Appeal Br. 29.
Regarding different sealing force vectors, the Examiner responds that
the modification of Kopala in view of Feder and/or Byram would not have
provided any changes to the force vectors required by Kopala, because the
modification involves only strap material taught by Feder and a spatial
configuration of the rear strap portion taught by Byram, the force vectors of
Kopala’s side straps 22 remaining unchanged. Ans. 72.
hacking any evidentiary support regarding different force vectors
being necessary in Kopala and Byram/Feder for appropriate sealing, and
lacking a technical explanation regarding the cause and effect of such force
vectors, we are not persuaded by Appellant’s argument.
Regarding Feder and Byram not being directed to a sleeping patient, it
is unclear why such a fact would cause the Examiner’s reasoning to lack a
rational basis.
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For the reasons explained above, we are not persuaded that the
Examiner’s reason for combining the modified harness of Kopala with Feder
and/or Byram lacks a rational basis.
Kopala and Baker
Regarding Rejections VII, VIII, and XII, Appellant argues that the
Examiner’s proffered reason for combining Kopala with Baker lacks a
rational basis because (1) the Examiner employs circular reasoning, (2)
Baker’s adjustability is contrary to the teaching of Kopala, and (3) there is
no problem of stability in Kopala. Appeal Br. 30.
As stated above, it is well settled that simple substitution of one
known element for another to obtain predictable results is an exemplary
rationale that supports a conclusion of obviousness. See KSR, 550 U.S. at
401. Thus, Kopala (and the other cited references) need not identify a
stability issue (or improvement) for the Examiner’s reasoning to have a
rational basis.
The Examiner responds that the rejection proposes to replace
Kopala’s thin single band 24 with Baker’s enlarged band 10, “which
contacts a larger area of the back of user’s head and avoids pulling or
tangling of the user’s hair (see abstract and Fig. 1-3),” which allows a
“comfortable and conforming fit to the user’s head” and “provides proper
motivation for the combination in order to provide increased comfort and
compliance.” Ans. 73. We disagree with Appellant’s contention that this
reasoning is “circular.”
Appellant fails to explain why Baker’s “adjustment is contrary to the
teachings of Kopala.” Appeal Br. 30. Both Kopala and Baker discuss the
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desirability of adjusting the harness about the user’s head. See, e.g., Kopala
2:58—64, 6:11—15; Baker 2:13 (“adjustable elastic strap”).
As explained above, we are not persuaded that the Examiner’s
reasoning lacks a rational basis.
Kopala and Petrie
Regarding Rejection IX, Appellant argues that the Examiner’s
proffered reason for combining Kopala with Petrie lacks a rational basis
because “Kopala does not include a chin strap, nor is there any reason why
one of ordinary skill would have been motivated to add a chin strap to
Kopala.” Appeal Br. 30.
The Examiner responds that Petrie was “relied upon for the coupling
member 20 between two strap elements of a harness,” which one skilled in
the art would have considered “well-known in the art” to “provide
adjustability between strap elements” according to a user’s preferred comfort
requirements, such that one skilled in the art would have “been motivated by
such teachings in order to provide greater comfort between the harness and
the user.” Ans. 73—74 (citing Petrie, Fig. 1, 3:1—8).
As stated above, it is well settled that simple substitution of one
known element for another to obtain predictable results is an exemplary
rationale that supports a conclusion of obviousness. See KSR, 550 U.S. at
401.
We are not persuaded that the Examiner’s conclusion of obvious
contains error. Appellant’s argument does not address the combination of
references proposed by the Examiner, which only utilizes Petrie’s D-ring 20
(and not the chin cup) in the modified harness of Kopala. Final Act 25. Use
of Petrie’s D-ring 20 in Kopala’s modified harness would not change the
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basic function of the D-ring — which predictably includes adjustability of
harness components and movement of such components relative to each
other. We also agree with the Examiner that this adjustability would be
understood by one skilled in the art to increase user comfort.
Rejections XIII XXXVI— Double Patenting
Appellant argues all of the double patenting rejections as a group,
contending that the rejections are unreasonable and must be withdrawn
because each rejection includes at least one reference that is non-analogous
art. Appeal Br. 31. The double patenting rejections include the prior art
references relied on in the rejections under 35 U.S.C. § 103(a). Final Act
37—66. For the reasons explained above, we are not persuaded that any of
the applied references are non-analogous art. We therefore sustain the
double patenting rejections.
DECISION
We AFFIRM the rejection of claims 44—57, 62—65, 72, 73, 75, 82, 83,
and 85 under 35 U.S.C. § 112 11.
We AFFIRM the rejection of claims 31, 33, 34, 36, 39-43, 56, 57, 64,
65, 73, 83, and 84 under 35 U.S.C. § 112 12.
We AFFIRM the rejection of claims 27, 33, 34, 39, 41—43, 56, 62—65,
72, 73, 75, and 82—85 under 35 U.S.C. § 103(a) as unpatentable over
Kopala, Gongwer, and Rudolph.
We AFFIRM the rejection of claims 29 and 36 under 35 U.S.C.
§ 103(a) as unpatentable over Kopala, Gongwer, Rudolph, and Feder.
We AFFIRM the rejection of claims 31 and 40 under 35 U.S.C.
§ 103(a) as unpatentable over Kopala, Gongwer, Rudolph, and Byram.
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We AFFIRM the rejection of claim 57 under 35 U.S.C. § 103(a) as
unpatentable over Kopala, Gongwer, Rudolph, and Bierman.
We AFFIRM the rejection of claims 44-47, 55, 74, and 77 under
35 U.S.C. § 103(a) as unpatentable over Kopala, Rudolph, Feder, and Baker.
We AFFIRM the rejection of claims 48 and 49 under 35 U.S.C.
§ 103(a) as unpatentable over Kopala, Baker, Rudolph, Feder, and Lombard.
We AFFIRM the rejection of claims 51—54 under 35 U.S.C. § 103(a)
as unpatentable over Kopala, Gongwer, Rudolph, and Petrie.
We AFFIRM the rejection of claims 66 and 69 under 35 U.S.C.
§ 103(a) as unpatentable over Kopala, Gongwer, Rudolph, and Feder.
We AFFIRM the rejection of claims 67 and 70 under 35 U.S.C.
§ 103(a) as unpatentable over Kopala, Gongwer, Rudolph, Feder, and
Sullivan.
We AFFIRM the rejection of claims 68 and 71 under 35 U.S.C.
§ 103(a) as unpatentable over Kopala, Baker, Rudolph, Feder, and Sullivan.
We AFFIRM the rejection of claims 27, 29, 31, 33, 34, 36, 39-49, 51—
57, 62—75, 77, 78, and 82—85 under various grounds of non-statutory
obviousness-type double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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